The Men's Wearhouse Inc. v. Brian Wick d/b/a Defaultdata.com
Claim Number: FA0208000117861
Complainant is The Men's Wearhouse Inc., Houston, TX (“Complainant”) represented by Mark N. Mutterperl, of Fulbright & Jaworski, L.L.P. Respondent is Defaultdata.com, Denver, CO (“Respondent”) represented by Brian Wick.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <suitwarehouse.com>, registered with eNom.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 2, 2002; the Forum received a hard copy of the Complaint on August 5, 2002.
On August 7, 2002, eNom confirmed by e-mail to the Forum that the domain name <suitwarehouse.com> is registered with eNom and that the Respondent is the current registrant of the name. eNom has verified that Respondent is bound by the eNom registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
An electronic copy of Respondent’s argument was timely received on August 30, 2002; however, the Exhibits to this Response were received after the deadline for response. Notwithstanding this non-compliance with ICANN Supplemental Rule 5(a), the Panel will consider the Response and Exhibits thereto.
On September 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name <suitwarehouse.com> be transferred from Respondent to Complainant. Respondent requests that the Complaint be dismissed and that Complainant be found acting in “bad faith in attempting to usurp the generic and common use” of <suitwarehouse.com> .
The <suitwarehouse.com> domain name is identical or confusingly similar to Complainant’s service mark THE SUIT WAREHOUSE and its pending service mark application for THE SUIT (MAN LOGO) WAREHOUSE.
Respondent has no rights or legitimate interests in the <suitwarehouse.com>domain name.
Respondent registered and used the domain name in bad faith.
Since 1973, Complainant, The Men’s Wearhouse, Inc., has operated as a retailer of men’s and boy’s clothing in the United States. Complainant owns a federal service mark registration for THE SUIT WAREHOUSE issued by the USPTO on June 5, 2001, for use with retail clothing store services. (Reg. No. 2,458,708). The register shows that “No claim is made to the exclusive right to use ‘warehouse’, apart from the mark as shown.” Complainant also owns an application for THE SUIT (MAN LOGO) WAREHOUSE filed with the USPTO on June 6, 1997, for use with retail clothing store services. (Application serial number 75/304,358). As of July 10, 2002, the USPTO had completed its review of the application and Complainant expects registration to issue in due course. In this application, Complainant has disclaimed “Suit” and “Warehouse.”
On December 19, 2001, Respondent, Brian Wick d/b/a DefaultData.com, registered the domain name <suitwarehouse.com>. Respondent uses the domain name <suitwarehouse.com> to automatically redirect Internet users to his web site <defaultdata.com> where Mr. Wick posts his views on cybersquatting and the American legal system.
Respondent has engaged in a pattern of registering domain names of law firms and Fortune 500 companies in connection with content similar to that appearing on <suitwarehouse.com>. Numerous cases have been filed against Respondent, most of which have resulted in transfer awards of the domain names in question to the trademark or service mark owners.
Numerous unrelated businesses use the words “Suit Warehouse” on the Internet.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
“Suit” and “Warehouse” are generic terms. See Pet Warehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (“Pet” and “Warehouse” are generic). Other decisions have found similar “warehouse”-formative marks to be generic. See Mil-Mar Shoe v. Shonac, 75 F. 3d 1153, 1160 (7th Cir. 1996) (the term “warehouse” as used in the sense of a retail store is common or generic; trademark protection refused for the term “Warehouse Shoes”, while also indicating that “Shoe Warehouse” provides an even clearer example of two generic terms that could not be subject to trademark protection); see also Warehouse Foods, Inc. v. Great Atlantic and Pacific Tea Co., 223. U.S.P.Q. 892 (N.D. Fla. 1984) (denying trademark protection to “Warehouse Foods” on grounds that the two generic words in combination were in themselves a generic designation); see also The Golf Warehouse v. Golf Warehouse FA 94419 (Nat. Arb. Forum May 9, 2000) (decision in favor of the Respondent regarding <golfwarehouse.com>).
Complainant owns a federal service mark registration for THE SUIT WAREHOUSE mark; however, Complainant disclaimed the exclusive right to use “warehouse” apart from the mark. Complainant also owns an application for THE SUIT (MAN LOGO) WAREHOUSE mark but Complainant disclaimed “Suit” and “Warehouse.” The effect of the disclaimer is that the applicant claims only the whole composite mark and not the particular portion(s) disclaimed. See Salem Five Cents Savings Bank v. Direct Fed. Credit Union, FA 103058 (Nat. Arb. Forum Feb. 15, 2002); see also McCarthy on Trademarks and Unfair Competition (3d ed. 1992) at x 19.20 1. The validity of the mark is to be determined by viewing the trademark as a whole and not just the words “Suit Warehouse.” See Lone Star Steakhouse & Saloon, Inc. v. Longhorn Steaks, Inc., 41 U.S.P.Q.2d 1896, 1902 (11th Cir. 1997).
Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning. See Pet Warehouse v. Pets.Com, Inc., supra. Complainant is entitled to this presumption as to its service mark THE SUIT WAREHOUSE; however, the presumption does not apply to “Suit Warehouse” which is less than the whole mark. To the extent Complainant has any rights pertinent to the disputed domain name, those rights must arise from its common law rights. As a consequence, Complainant has the burden of showing secondary meaning for its claimed service mark, assuming that the name is not generic. See Pet Warehouse v. Pets.Com, Inc., supra. Complainant has failed to establish that the words “Suit Warehouse,” apart from the registered service mark as a whole, have acquired a secondary meaning such that the relevant public exclusively associates the words with Complainant as a source of services. Pet Warehouse v. Pets.Com, Inc., Id.
Furthermore, the words “Suit Warehouse” are not exclusively associated with Complainant. See Winchester Props., LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001) (“Respondent has shown that the word ‘Winchester’ alone is used by entities other than Complainant.” The domain name <winchestercc> is not identical or confusingly similar to Complainant’s mark, Winchester Country Club, nor is it a mark in which Complainant can claim rights or interests.); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (“concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website.”).
Therefore, Complainant has failed to establish exclusive rights in the service mark “Suit Warehouse” for the purposes of satisfying Paragraph 4(a)(i) of the Policy. Since Complainant has not submitted sufficient evidence to establish protectable rights in the domain name <suitwarehouse.com>, the issues of rights or legitimate interests and bad faith need not be addressed.
Complainant has not engaged in reverse domain name hijacking within the meaning of ICANN Rule 15(e). Although Complainant has not demonstrated its exclusive right to the domain name, neither has it evidenced bad faith by initiating these proceedings.
The claim is denied for failure to establish Policy ¶ 4(a)(i) and the requested relief is DENIED.
The Honorable Charles K. McCotter, Jr.
Dated: September 16, 2002
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